Per se legal? The Eleventh Circuit Rejects FTC’s “Unlikely to Prevail” Antitrust Challenge to “Reverse Payment” Patent Settlements

By Meera El-Farhan In F.T.C. v. Watson Pharmaceuticals, Inc., 677 F.3d 1298 (11th Cir. 2012) the U.S. Court of Appeals for the Eleventh Circuit rejected the Federal Trade Commission’s (“FTC”) antitrust challenge to “reverse payment” patent settlements. Under the terms of the “reverse payment” (or “pay-for-delay”) agreement, the patent owner of AndroGel, Solvay Pharmaceuticals, Inc. (“Solvay”), agreed to make over $20 million annual payments to the generic challengers Watson Pharmaceuticals, Inc., Par Pharmaceuticals, Inc., and Paddock Laboratories, Inc. In return, the generic challengers agreed to stay out of the market until 2015, unless another generic version was to enter the market before then.   The FTC brought suit against all parties to the agreement. The FTC challenged the “pay-for-delay” settlement on the basis of unfair restraint of trade (the settlement allegedly being an “unlawful agreement not to compete,” in violation of section 5(a) of the Federal Trade Commission Act[1] (“FTCA”)). The FTC argued that such monopolies allow both generic and

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Federal Circuit Clarified Intersection of Patent Misuse and Antitrust

En Banc Court Finds Block Licensing Of Essential and Non-Essential Patents Does No Provide Patent Misuse Defense In Princo Corp. v. Int’l Trade Comm’n, 2010 U.S. App. LEXIS 18101 (Fed. Cir. August 30, 2010) (en banc), Sony and Philips own patents related to CD-R/RW technology as defined in a standard, the Orange Book standard.  In arriving at this standard, there were competing methods of encoding position information on the disc: The Philips approach, which is outlined in the “Raaymakers patents,” and the Sony approach, which is outlined in the “Lagadec patent.”  Eventually, both Sony and Philips decided on using the Philips approach for the Orange Book standard since the Sony approach was difficult to implement and prone to error.  In order to provide a convenient mechanism for licensing the necessary patents to conform to the Orange Book standard, Philips managed block license packages.   The block license packages included both the Raaymakers patents and the Lagadec patent.

Federal Circuit Finds Unenforceability for Failure to Disclose Patents to Standards-Setting Organization

In Qualcomm v. Broadcom, 548 F.3d 1004 (Fed. Cir. 2008), Qualcomm is the owner of U.S. Patent Nos. 5,452,104 (“the ‘104 patent”) and 5,576,767 (“the ‘767 patent”).  The ‘104 and ‘767 patents relate to video compression technology. The Joint Video Team (“JVT”) is a standards-setting organization (“SSO”) which was established in late 2001 as a joint project by two parent SSOs to develop a single “technically aligned, fully interoperable” industry standard for video compression technology. In order to avoid “patent hold-up,” the JVT required participants to disclose and/or give up intellectual property rights (“IPR”) covering a standard. In May 2003, the JVT adopted and published the official H.264 standard.  Qualcomm was a member of the JVT during the development of the H.264 standard, but did not disclose the existence of the ‘104 and ‘767 patents as required by the SSOs. On October 14, 2005, Qualcomm filed a lawsuit against Broadcom in the United States District Court for the Southern District

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